This guide is based on UK law. It was last updated in January 2012.
The DTI thinks that this is bad news for innovation: what is the point of coming up with a new idea if protecting that idea will exhaust your resources? A procedure was introduced in October 2005 that provides a fast track aimed at nipping patent disputes in the bud.
First, an outline of the procedure. The idea is that a patent holder can apply for an opinion on whether the actions of another party infringe his patent. Also, anyone is entitled to challenge a patent by applying for an opinion on whether that patent has the degree of novelty or the inventive step required for validity.
The opinion is prepared by an examiner of the UK Intellectual Property Office. Examiners are the officers who presently deal with patent applications. The process takes a maximum of three months, and costs £200 to apply for an opinion. It is a paper-based process, and the parties' written submissions are limited in length. So, whilst some may want to get input from their lawyers to put their submissions together, the process is going to be radically quicker and cheaper than litigation. The decision of the examiner will be published on the register of patents. So far so good. But, as ever, it is not as straightforward as that.
First, pity the poor examiner. Patent disputes arise because the issues are complex. This is partly why it takes judges, experts and lawyers months or years to resolve them. Sometimes even judges come to the wrong conclusion, and their decisions are overturned on appeal. But to make the new process viable, the examiner is going to have to form a view in just a few hours. What if it is just too difficult? Given that the examiners have such an onerous task, how often will they come to the "wrong" conclusion?
Perhaps partly in recognition of this, the decision of the examiner is non-binding. It cannot be enforced as a court judgment can. If a party wants to enforce its rights, it must commence proceedings in the ordinary way, and the court is not bound by the examiner's decision. So, ultimately, the process does not avoid the need for litigation. It will not stop commercial heavyweights using the legal process to grind down those with less resources, but it may bring smaller scale disputes to a swift conclusion where the parties have no appetite for a protracted legal battle.
To have a non-binding process seems logical, but it means that the examiner's decision attracts a curious status. Usually, when two parties seek a non-binding view about the merits of their legal cases, they do so on a without prejudice basis. They may, for example, get a senior barrister to give a view, but they do it in carefully controlled circumstances. This without prejudice privilege means that the opinion is confidential and that it cannot be revealed to anyone else, including the judge.
The new IPO patent process is not confidential or without prejudice. The decision of the examiner will appear on a public register for all the world to see. In practice, that decision is unlikely to be kept from the judge in subsequent litigation. As such, the decision of the examiner may set an expectation of how the litigation will ultimately turn out.
Most litigation does not end up with a final judgment at trial, but with a settlement agreed between parties. In some cases, an early opinion from the UK Intellectual Property Office may facilitate early settlement. In others, it could have the opposite effect. The holder of a favourable opinion may cling to it, and so be willing to settle only on terms very favourable to him.
So, how is the system shaping up? After a slow start, by February 2008, 53 substantive opinions were delivered. By August 2011 there had been 144 opinions to date, showing that the demand for opinions is picking up.
If you do not agree with an opinion then there are options you can choose from to challenge it, such as commencing revocation proceedings in a court or with the IPO, or by seeking a declaration of non-infringement. Another option is to apply for the opinion to be reviewed by the IPO, this can result in the opinion being set aside if it is not agreed with. However, even if the IPO find a patent to be invalid they will not cancel it or award damages for an infringing act. To pursue the matter you will need to file revocation or infringement proceedings.
There was a case in 2008 where the English High Court reviewed one of the opinions. The unhappy complainant was disappointed. The Court was not prepared to intervene unless the original decision and subsequent review by the Patent Office were clearly wrong, which was not the case.
In time, we may see the opinion process spreading to other disputes. Take trade mark disputes for example: they can perhaps in time be expensive and time consuming to resolve; they may not be technically complex, but that could make them more suited to the provision of an early opinion by a trademark examiner. It could catch on.